Michael Brandt Family Trust and its licensee Eco-Fresh Industries, Inc. v. Green Street Dev / Philip Beere
Claim Number: FA1109001408477
Complainant is Michael Brandt Family Trust and its licensee Eco-Fresh Industries, Inc. (“Complainant”), represented by Barth X. deRosa of Dickinson Wright, PLLC, Washington D.C., USA. Respondent is Green Street Dev / Philip Beere (“Respondent”), represented by Kristopher K. Rezagholi of LAW OFFICES OF KRISTOPHER K REZAGHOLI., Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecofreshplanet.com>, registered with Enom, Inc. (The “Disputed Domain Name”)
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
R. Glen Ayers, Paul DeCicco, and Kendall Reed as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 22, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the Dispute Domain Name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ecofreshplanet.com. Also on September 27, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 21, 2011.
Complainant submitted an Additional Submission on October 25, 2011 in compliance with Supplemental Rule 7.
Respondent submitted an Additional Submission on October 31, 2011 in compliance with Supplemental Rule 7.
On November 1, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Paul DeCicco, and Kendall Reed as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Michael Brandt began using, at least as early as 1988, the trademark ECO-FRESH in connection with carpet deodorizers, as well as pest control and carpet cleaning related services. Thereafter, Mr. Brandt also licensed use of the ECO-FRESH trademark in connection with a wide variety of products.
On September 26, 1989, Mr. Brandt received a United States federal trademark registration, number 1,557, 539 (the “’539” trademark), for the trademark ECO-FRESH for the following claimed goods and services: "carpet cleaner and deodorant” and "pest control, janitorial and carpet cleaning and services.” The claimed date of first use was August 10, 1988.
January 29, 1991, Mr. Brandt received a United States federal trademark registration, number 1,632,840, for the trademark for the same claimed goods and services as for the ‘539 trademark. This registration includes the stylized words "eco-fresh" plus design [with a stylized representation of a bird, pine trees, sky, mountains, and stream]. The claim date of first use was August 10, 1998.
On April 6, 1993, Mr. Brandt received a United States federal trademark registration, number 1,763,136, for the word mark ECOFRESH, for "cat litter.” The claim date of first use was June 1991. (Hereinafter these three trademark registrations are collectively preferred to as "Complainant's Trademarks.")
In October 2009, Mr. Brant assigned all rights and interest to Complainant's Trademarks to the Complainant Michael Brant Family Trust, which subsequently licensed said marks to Complainant Eco-Fresh Industries, Inc.
In 2009, Complainant began a nationwide promotional program for the goods and services under Complainant's Trademarks and has expended in excess of $1 million in this effort, which, in conjunction with Complainant's other uses and promotion of its goods and services under Complainant's Trademarks, have resulted in Complainant’s Trademarks being identified with a single source of high quality and environmentally friendly products.
Respondent registered the disputed domain name on or about February 17, 2004.
At least as early as 2010, Respondent used the Disputed Domain Name as part of its web address, www.ecofreshplanet.com. Apparently respondent has stopped using the ECOFRESH trademark in connection with goods and services, and currently Respondent's web address is www.efreshplanet.com. The Disputed Domain Name now directs to this new web address.
The Disputed Domain Name is identical or confusingly similar to Complainant’s Trademarks because the Disputed Domain Name includes the entirety of Complainant’s Trademarks and adds only a generic top level domain identifier (gTLD) “.com” and the generic word "planet."
Respondent has no rights or legitimate interests in the Disputed Domain Name because of the following reasons: 1) Respondent does not have a federal trademark registration for any mark that is in any way similar to the words "eco-fresh"; 2) Respondent is not commonly known by the Disputed Domain Name; 3) Complainant has not given Respondent permission to use Complainant’s Trademarks as a domain name; 4) Respondent is attempting to use the Disputed Domain Name to divert customers from Complainant, which is not a use in connection with a bona fide offering of goods or services; and 5) Respondent is not using the disputed domain name in a legitimate non-commercial or fair use manner.
Respondent’s use of the Disputed Domain Name is in bad faith because: (1) Respondent's constructive notice and actual knowledge of Complainant’s
prior rights in and federal registrations for the “ECO-FRESH” and “ECOFRESH” marks, (2) Respondent’s registration, use and, on information and belief, renewal of a confusingly similar domain name to trade on the goodwill of Complainant’s “ECO-FRESH” and “ECOFRESH” marks and name, and (3) Respondent’s disruption of Complainant’s business by using the domain name to divert consumers to a website where Respondent offers similar or competing services, it is plain that Respondent has registered and used the <ecofreshplanet.com> domain name in bad faith.
B. Respondent
Respondent, Philip Beere, has spent the last decade becoming an expert, leader and innovator in the field environmentally conscious janitorial and homebuilding services. Respondent holds an M.B.A. from Arizona State University, is a LEED accredited professional and has been nationally recognized for his work in this field, having recently won the prestigious 2010 Remodeler Advocate of the Year award from the National Association of Home Builders.
On or about November 26, 2003, Respondent Beere Incorporated Healthy Indoor Environments, Incorporated (“HIE”) for the purpose of operating an eco-friendly, Leadership in Energy and Environmental Design ("LEED") certified cleaning and janitorial services company. Respondent does not now nor has it ever offered for sale cleaning supplies, chemicals or other tangible products.
To further this business, on or about February 17, 2004 Respondent Beere acquired the Disputed Domain Name. Thereafter, Respondent adopted “Eco Fresh Planet” as the d/b/a for Respondent’s LEED certified janitorial services.
Respondent Beere changed the d/b/a of HIE to “E-Fresh Planet” and acquired the domain name <efreshplanet.com>. This was done because Respondent Beere had received negative feedback from his clientele and the public at large regarding the word “eco.”
In August 2004, Respondent attempted to register the trademark EFRESH PLANET. His application was denied by the United States patent and trademark office because of Complainant's Trademarks. In connection with this effort to register the trademark, Respondent received advice from his attorney that his commercial activities did not compete with those of Complainant.
Respondent is not cyber-squatting as defined in the Anti-Cybersquatting Consumer Protection Act.
Respondent does have rights and legitimate interests in the Disputed Domain Name. First, Respondent is in fact using the Disputed Domain Name in connection with a bona fide offering of services. Respondent provides LEED based janitorial services located out of Scottsdale, Arizona which are limited to the Phoenix metro area. From approximately 2004 to July of 2011, Respondent’s company HIE operated under the d/b/a “Eco-Fresh Planet” and used a stylized graphic logo. Even today, as Respondent’s company HIE operates under the d/b/a/ E-Fresh Planet, the Disputed Domain Name still serves the valuable purpose of directing former customers, viewers of older advertisement or older print and electronic directories to HIE’s services. Accordingly, the Disputed Domain Name, both at the time of registration and currently, is being used to further a bona fide offering of services.
Respondent is not using the Disputed Domain Name in an effort to divert customers away from Complainant for Respondent’s benefit. It is unlikely that anyone seeking complainant's website, which is <ecofreshusa.com> would type “ecofreshplanet.” Furthermore, by Complainant’s own admission, Respondent’s domain existed five years prior to the creation of <ecofreshusa.com>, which then begs the question: how could Respondent have created a website with the intent of diverting web-traffic away from a site that did not exist? The two parties offer completely different services and market to different consumers (end user as opposed to resellers). Neither party is particularly well known outside their respective territories, and thus there would be no benefit to “diverting” consumers looking for an obscure multilevel marketing company located in Texas, to a Scottsdale, Arizona based LEED janitorial service.
Respondent did not act in bad faith in acquiring the Disputed Domain Name. Respondent does not engage in the conduct commonly associated with cybersquatting such as domain warehousing, selling of domains, diverting traffic or otherwise profiting from Complainant’s marks. Respondent is not now, nor was he ever in the business of acquiring and selling domains or generating revenue directly from internet traffic. Additionally, the arguments above with respect to the absence of intent to divert customers apply here with respect to bad faith.
Moreover, the relevant time period for determining bad faith is the time at which a domain name is registered. For the Disputed Domain Name, that was in or about February of 2004. Therefore, Complainant’s subsequent trademark filings, marketing and other acts which allegedly took place in 2009-10 would not be relevant to the Forum’s analysis.
Further, by filing its complaint herein, Complainant is engaging in reverse domain hijacking after failing to strong arm Respondent into a license agreement
C. Complainant’s Additional Submission
For purposes of the first element of the Policy, it is sufficient that the Disputed Domain Name incorporate Complaint’s Trademark in its entirety and adds only generic words, here the word “planet.” It is not relevant that the Respondent and Complaint do not compete in the marketplace (which they do), and in any case, the recitation of claimed goods and services within Complainant’s Trademark (specifically the ‘539 trademark registration) reads onto Respondent’s commercial activities.
For purposes of the second element of the Policy, Respondent was on constrictive notice of Complainant’s Trademark when Respondent registered the Disputed Domain Name. Further, Respondent admits that it learned about Complainant’s Trademark in or about August 2004, which strongly suggests that Respondent knew earlier and at the time Respondent registered the Disputed Domain Name on February 17, 2004.
D. Respondent’s Additional Submission
Complainant has failed to demonstrate that Respondent had actual knowledge of Complainant’s Trademarks at the time Respondent registered the Disputed Domain Name, and this is fatal to Complainant's claim.
With respect to rights In the Disputed Domain Name, Complainant argues that Respondent does not have rights in the Disputed Domain Name because Complainant owns trademarks to the word “eco-fresh” and Respondent does not. This is not sufficient under the Policy.
Complainant’s additional submission does nothing to show how or to what extent, if any, it (as a multi-level marketer) is actually competing with Respondent’s LEED Phoenix based janitorial services. Ordinarily a panel will not find a lack of legitimate rights to use a disputed domain name if the two parties are not competitive with each other.
Complainant is the owner of Complainant's Trademarks.
Respondent registered the Disputed Domain Name on or about February 17, 2004.
Complainant’s business conducted under Complainant's Trademarks consists of offering for sale cleaning products including deodorizing cleaner, instant odor neutralizer, bath tub and tile cleaner, jewelry cleaner, odor absorber, etc. further, Complainant offers multilevel marketing business opportunities with respect to the sale of its products.
Respondents business conducted under the disputed domain name consists of providing janitorial services and carpet cleaning services to clients. Respondent does not offer business opportunities to others, and Respondent does not offer cleaning supplies for sale, other than as would be necessary in its business operations.
Complainant has not granted a license or other authority to respondent to use Complainant's Trademarks.
At least five trademark registrations exist for the trademark ECOFRESH other than Complainant's Trademarks, and at least two companies other than Complainant and Respondent use the expression “Eco-Fresh” as a trade name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
First Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Michael Brandt Family Trust, and its licensee Eco-Fresh Industries, Inc. Complainant, Michael Brandt Family Trust, argues that it owns the ECOFRESH trademark (1,763,136). Complainant alleges that it formed Complainant Eco-Fresh Industries, Inc. and licensed the mark to the company.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
In the instant action, the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants; and this Panel shall treat them all as a single entity in this administrative proceeding.
Preliminary Issue: Non-UDRP Legal Arguments
Respondent argue various legal points pursuant to Anti-Cybersquatting Consumer Protection Act as they may apply to each element of the Complaint. This proceeding is governed by the UDRP and not the Anti-Cybersquatting Consumer Protection Act. See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
The Anti-Cybersquatting Consumer Protection Act (the “Act”) addresses some of the same issues found in the Policy, and arguments raised by the parties with respect to those issues are relevant here for that reason. All other issues under the Act and related arguments are better suited for a court; however, it is to be noted that a finding of liability under the Act by a court could well have relevance to the question of “bad faith” under the Policy.
Under the first element of the policy, a complainant must demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar thereto.
For purposes of establishing rights in a trademark, it is generally sufficient that a complainant demonstrate that it owns a registration issued by a national authority, such as the United States Patent and Trademark Office. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Complainant has submitted evidence of its registration of the Complainat’s Trademarks with the USPTO.
The panel finds that this is sufficient for Complainant to establish rights in Complainant’s Trademarks.
A disputed domain name is confusingly similar to a trademark if it incorporates the entirety thereof and adds only generic words and a generic top-level domain (“gTLD”), such as “.com.” See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Here, Complainant’sTrademarks are the mark ECO-FRESH. The Disputed Domain Name is <ecofreshplanet.com>, which clearly incorporates the entirety of Complainants Trademarks, with the addition of the gTLD “.com” and the word “planet.” The word "planet" is generic and adds nothing to create a distinction.
As such, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights for purposes of Policy ¶ 4(a)(i).
Under policy paragraph 4(a)(ii) a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name, and then the burden effectively shifts to the respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Here, Complainant demonstrates that Respondent is not known by the Disputed Domain Name, rather Respondent is known by the name Philip Beere and Green Street Dev, neither of which is "eco fresh." Complainant further demonstrates that it has not granted a license or other authority to Respondent to use Complainants Trademarks. Complainant also demonstrates that Respondent is using the Disputed Domain Name for commercial purposes and not for the purpose of critical comment. For these reasons, this Panel finds that the Complainant has met its burden under this element of the Policy which operates to effectively shift the burden to Respondent to overcome Complainant’s evidence and show it has rights and interests in respect of the disputed domain name.
Respondent argues that pursuant to Policy Paragraph 4(c)(i), it has and continues to use the Disputed Domain Name in conjunction with a bona fide offering of goods and services, namely providing LEED based janitorial services located out of Scottsdale, Arizona, is limited to the Phoenix metro area, and that this usage began before Respondent was aware of Complainant and Complainant’s Trademarks. Respondent has demonstrated that it used the Disputed Domain Name in this fashion and that it began doing so before it was aware of Complainant and Complainant’s Trademarks.
Complainant argues that Respondent was at least on constructive notice of Complainant’s Trademarks at the time Respondent registered the Disputed Domain Name. Constructive notice arose from Complainant’s trademark registrations. However, constructive notice is insufficient under the policy. See Barclays Global Investors, N.A. v. SocialFunds.com, LLC n/k/a SRI World Group, Inc. No: FA0309000196046 (NAF Nov. 5, 2003) (“The Panel rejects the view that constructive knowledge is (or can ever be) sufficient” to show bad faith.”)
Complainant also argues that this offering of services by Respondent using the Disputed Domain Name was and is not bona fide because Respondent’s purpose was and is to divert customers from Complainant to Respondent, which other panels have found to preclude a finding of a bona fide offering of goods or services. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)(a respondent’s use of disputed domain name to sell its own goods or services demonstrates the respondent’s lack of rights and legitimate interests in the disputed domain name). This Panel believes that this exception to policy paragraph 4(c)(i) is better dealt with under policy paragraph 4(b) and the issue of “bad faith,” although this Panel does agree that the use of a disputed domain name which is in bad faith under Policy Paragraph 4(b) would not be a bona fide use under policy paragraph 4(c)(i).
As discussed below, this Panel does not find that Respondent’s registration and use of the Disputed Domain Name was in bad faith. As such, this Panel finds that this exception to Policy paragraph 4(c)(i) does not apply here. Therefore, Respondent has carried its burden with respect to policy paragraph 4(a)(ii).
Respondent argues that it was commonly known by the Disputed Domain Name because it used "Eco-Fresh Planet” as a d/b/a for a period of time. However, this argument is insufficient. In order for this argument to be persuasive, the use of the d/b/a would have to have been such that it amounted to a common-law trademark, and no such showing was made.
Complainant argues that Respondent did so intend because: (1) Respondent's constructive notice and actual knowledge of Complainant’s prior rights in and federal registrations for the “ECO-FRESH” and “ECOFRESH” marks, (2) Respondent’s registration, use and, on information and belief, renewal of a confusingly similar domain name to trade on the goodwill of Complainant’s “ECO-FRESH” and “ECOFRESH” marks and name, and (3) Respondent’s disruption of Complainant’s business by using the domain name to divert consumers to a website where Respondent offers similar or competing services, it is plain that Respondent has registered and used the <ecofreshplanet.com> domain name in bad faith.
This Panel does not agree and finds that Respondent did not intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
The Disputed Domain Name is confusingly similar to Complainant’s Trademarks for purposes of the Policy, as noted above.
The parties’ goods and services are somewhat related, but they are not identical and the parties’ customers are different. Complainant’s customers seek to buy cleaning supplies, such as deodorizing cleansers, instant odor neutralizers, bath tub tile cleaners, etc., all marketed as eco-safe and “green.” In terms of services, Complainant offers a multi-level marketing opportunity for the sale of such goods. The Panel finds no support in the record for Complainant conducting janitorial services, although such services are part of claimed services in its ‘539 trademark registration, which may have more relevance in a suit for trademark infringement. Respondent’s services are eco-friendly and “green” janitorial and cleaning services. Respondent does not sell cleaning supplies. Respondent’s customers seek to hire janitorial and cleaning services.
Whatever might be said about whether the respective goods and services of the parties are related for purposes of trademark law, the issue for this Panel is whether the respective goods and services are related such that an inference can reasonably be drawn (or as in some cases, cannot reasonably be avoided) as to the intent of Respondent with respect to its registration and use of the Disputed Domain Name. This Panel finds that here the relationship does not support such an inference.
The use of the expressions “eco” and “eco-fresh” as trademarks or a portion of a trademark are weak and dilute. The expression “eco” is used as generic word in speech. Complainant itself uses the expression “eco” in this manner in its promotional literature when it states: “As the first eco-company, Michael’s [Brandt] vision was to create products that people could use that were much safer than those being sold at the time” (emphasis added). Also, Respondent identifies a number of other trademark registrations for the mark ECOFRESH. Further, Respondent identifies at least two companies which offer cleaning services that use the expression “Eco-Fresh” as a trade name. Again, the issue for this Panel is whether an inference as to Respondent’s intent should be drawn. When a mark is strong and unique, such as with DISNEY or FORD for example, then an inference of intent can be compelling. However, where the involved mark is weak and dilute, then an inference does not necessarily follow, and this Panel finds that such an inference is not warranted here.
Respondent learned about Complainant’s Trademarks in or about August 2004, which is after Respondent registered the Disputed Domain Name on or about February 17, 2004. As such, at the time of registration, this Panel finds that Respondent had no intention with respect to Complainant or Complainant’s goods or services. RMT, Inc. v. Domain Finance Ltd. No.FA0408000313843 (NAP Nov. 3, 2004) (Bad faith “cannot be established” where “[t]here is no evidence Respondent had knowledge of Complainant or its mark when it registered the disputed domain.”); The Landmark Group v. DigiMedia.com, L.P., No. 285459 (NAF Aug. 6, 2004),1[vi] (“Respondent cannot be found to have engaged in bad faith registration of Complainant’s mark if it had never heard of Complainant’s mark at the time of the registration.”); See also DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (no bad faith registration if respondent had not heard of complainant’s mark at time of registration).
Further, at the time that Respondent attempted to register its own trademark, it was advised by its attorney that its commercial activities were not competitive with those of Complainant. Without adopting this opinion of counsel, the fact of this advice suggests that Respondent did not intend to confuse the public as to the source of its services.
With respect to Respondent’s continuing use of the Disputed Domain Name, Respondent argues that it used the Disputed Domain Name because former customers know this domain name. Further, older promotional literature indicates it as Respondent’s domain name. Respondent has a business need to keep this domain name active so as to not lose potential sales to customers who have this information. This use would be similar to maintaining an old telephone number that forwards to a company’s new telephone number. This Panel finds this explanation reasonable and not supportive of an inference that Respondent’s intent is to confuse Complainant’s customers.
That Respondent refused Complainant’s demand that Respondent end its use of the Disputed Domain Name may have relevance in a suit for trademark infringement, but under the Policy it is not relevant, except in so far as it may provide support for the required inference of intent, which this Panel finds it does not do here.
That Respondent created a new domain name, <efreshplanet.com>, after Complainant raised its object to Respondent’s use of the Disputed Domain Name does not support the required intent. Respondent asserts that it did so long after Complaint’s last communication on the issue (approximately a year and one-half) and because the expression “eco” had both lost its marketing cache and had developed a negative connotation equivalent to “costly.” This Panel finds this is a plausible explanation. Further, even if there were a direct cause and effect relationship, it is not necessarily an admission of wrongdoing to “hedge one’s bets.”
Complainant argues that Respondent’s actions also violates Policy paragraph 4(b)(iii) in that Respondent purposefully attempted to disrupt the business of Complainant. However, Complainant does not point to any additional or different conduct on the part of Respondent in support of this argument. As such, as Complainant’s argument with respect to Policy paragraph 4(b)(iv) falls, so does this argument.
As such, Complainant has failed to establish this element of the Policy.
Revers Domain Name Hijacking
Respondent argues that Complainant’s purpose in filing the instant administrative proceeding was to wrongfully pressure Respondent to transfer the Disputed Domain Name.
This Panel disagrees. The Complainant established confusing similarity and carried its burden with respect to the issue of rights or legitimate interests. Whereas Complainant did not carry its burden with respect to bad faith, the decision on that point was not so clear as to warrant the inference that Complainant should have known that it could not do so. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ecofreshplanet.com> domain name remain with Respondent.
R. Glen Ayers, Paul DeCicco, and Kendall Reed, Panelists
Dated: October 14, 2011
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